Tag Archives | cease and desist

At its most basic, a trademark cease and desist letter explains the what and why of the wrongful conduct and requests that it stop. Below provides a more detailed explanation of some components that may go into a cease and desist letter, depending on the circumstances.

1. Who is this?

Simply explain who you are. For example, “I’m the president of Acme, Inc.”

2. Tell them what you want

Provide a brief one or two sentence summary of the issue and what you want. For example, “I am writing regarding Beta Inc.’s use of the word “BOSSES” in connection with the sale of widgets. As this use infringes Acme’s trademark rights, Acme demands that you immediately stop all use of BOSSES in connection with the sale of widgets.”

In my last post, I discussed the case of EDS versus EDS. In that case, one company that used the EDS mark opposed another company’s registration of the mark EDS. Identical trademarks. Sales to the same customers. But no conflict.

A trademark is considered primarily geographically descriptive when (1) the mark’s primary significance is a generally known geographic location; (2) the goods or services originate in the place identified in the mark, and (3) that the relevant public would be likely to make a goods/place association, that is, would be likely to believe that the goods originate in the place named in the mark. TMEP 1210.

British Bulldog Ltd. applied to register the trademark PLAYERS on the goods of men’s underwear. The trademark examiner refused to register the mark claiming that it conflicted with a previously registered mark PLAYERS for the goods of shoes.

But the appeals board overturned the refusal and found that there was no likelihood of confusion between the marks in the case of In re British Bulldog, Ltd., 224 U.S.P.Q. 854 (TTAB 1980).

How could identical marks not be in conflict when used on items that a person wears, e.g. underwear and shoes?

Capital City Bank filed a trademark application on its name “Capital City Bank” for banking services without a logo or special form claim. Citigroup filed an opposition based on its Citibank trademarks. Citibank presented evidence that the Citibank brand was one of the most valuable brands in the world. But, Citigroup lost.

When there was a clear over lap of “City Bank” and “CitiBank” between the marks, how could one of the most valuable brands loose?

The problem was that the court concluded that the marks were not similar for trademark infringement purposes.

Frederic Towers began using the term “The Professional Portfolio System” in November 1982 for a computer-based portfolio valuation system.

Advent Software obtained a registration for the term “The Professional Portfolio” for computer programs used in the field of financial management. Advent first used the term in December 1983, more than one year after Towers’ first use.

Towers petitioned to cancel Advent’s trademark based on the similarities of the marks and the similarities of the goods, but lost.

Domino is a trademark for and a brand of sugar. Sugar is a type of food. Domino’s Pizza is a trademark for a pizza restaurant chain. Pizza is a food.

Amstar, which owned the Domino sugar brand at the time, sued Domino’s Pizza alleging trademark infringement over the use of the term Dominos. But Amstar lost.

Why? Similarity of the marks and similarity of the goods is usually a good start to making a strong case of trademark infringement. Here, there was a similarity between the marks, e.g. “Domino.” And, there was an arguably similarity between the goods, e.g. food.

Yet, Amster lost because, in part, the Domino mark was weak in relation to food generally.

Daniel Group obtained a federal registration on service mark “ServicePerformance.” But Daniel Group failed when it demanded and then sued claiming trademark infringement to stop Service Performance Group from using that name for similar services. Why did it fail?

Because the Daniel Group was not first to use the words “Service Performance” in business for its services. Service Performance Group began using its name 9 years before Daniel Group received its federal trademark registration.

Daniel Group did not have “priority of use.” So its trademark claim failed even though it had a federal registration and Service Performance Group did not (the space vs. no space between Service and Performance had no impact in this case).

A federal trademark registration is not bullet proof against prior users. This is the case of Daniel …